Did the IMPI deny you the registration of your trademark and have you been using it for some time?

Did the IMPI deny you the registration of your trademark and have you been using it for some time?

Registering a trademark with the Mexican Institute of Industrial Property (IMPI) is essential to protect your business and ensure that your products or services are legally recognized. However, what happens if the IMPI denies you to register your trademark? Here is a complete guide with the steps to follow in four scenarios:

1. File an Objection

What is an Objection?

An objection is a formal response that you can file with the IMPI if you believe that the refusal to register your trademark was unjustified. This answer should argue why your trademark should be registered, providing solid legal evidence and arguments. Filing an objection gives you a second chance to make a compelling case and get the protection you want.

2. Request an Administrative Expiration Declaration

What is a Request for an Administrative Declaration of Expiration?

This legal remedy allows you to cancel a registered trademark if it has not been used for a continuous period of three years. You must submit the corresponding request to the IMPI, who will notify the counterparty. The counterparty must demonstrate the continuous, real and effective use of their trademark for the three years prior to the application. If the IMPI determines that the trademark has not been used, it can declare its expiration and release the registration, allowing you to register your trademark.

3. Submit a Request for an Administrative Declaration of Nullity

What is a Request for an Administrative Declaration of Nullity?

This remedy allows you to annul a trademark that was improperly granted. The grounds for nullity include registration in bad faith, error, or when the trademark is similar in degree of confusion with another that was already used in the country or abroad before the application. You must gather evidence to support your case and file the request with the IMPI. If it is determined that the trademark fits any of the reasons mentioned above, the IMPI can declare it null and void and release the registration for you.

4. Modify the Brand Name

If the IMPI denies you to register your trademark and the above options are not feasible, changing your brand name may be the best alternative. It is essential to consult with an intellectual property expert to assess the viability of the new name and ensure that it complies with all applicable rules and regulations.

The IMPI's refusal to register your trademark may seem like a major obstacle, but you have several options to overcome this challenge.

At RMG, we would love to be part of your project. Contact us for expert advice and to ensure that your brand gets the protection it deserves.